I have received an Obviousness-type double patenting rejection of a CIP application (hereinafter CIP2) over its parent application, which is a CIP (hereinafter CIP1) of a first filed application (hereinafter Patent1). My questions are:

1. Is there any way to avoid filing a terminal disclaimer in CIP2? 2. Is there any point in trying to avoid a terminal disclaimer since the term of CIP2 will already expire with the term of CIP1?3. Will filing a terminal disclaimer limit the term of CIP2 all the way back to Patent1?4. Is the term of CIP2 already limited by Patent1 because CIP1 claims priority to Patent1?

1. Yes. You can argue about why the differences between the claims in CIP2 are more than just obvious differences vis-à-vis CIP1's claims. If they really are just obvious variants, you probably don't want to make these arguments. Many practitioners don't like putting such arguments on the public record in any event. You could also make an amendment to CIP2 and argue that this amendment makes it non-obvious over CIP1's claims.

2. Two things to consider. If CIP2 gets more PTA than CIP1 got, then yes, you would be giving up term. Also, to the extent the examiner is not quite correct about the obviousness of CIP2's claims over CIP1, a TD means you must keep the patents always owned by the same entity, so you forego the opportunity to sell the patents separately to different parties. This doesn't come up much, but I do know one guy who got into hot water for just accepting a somewhat questionable OTDP determination and filing the TD, and then later the patentee actually came up with different potential buyers for the two patents, but couldn't sell separately. (Whether they unfairly beat him up over this is another discussion - they claims weren't really that different.)

3. Assuming no PTA in P1, CIP1, CIP2, they're all tied together anyway. If CIP2 gets PTA greater than CIP1, you lose CIP2's PTA to the extent it is greater than CIP1's PTA. I don't know that P1's term is relevant here at all, since you have not mentioned that CIP1 had a TD over P1 (or did it?).

If CIP2 gets no PTA, it will expire on the statutory deadline of P1 and CIP1 (20 years from P1 filing date). Even if CIP1 does have some PTA, in this case CIP2 still expires on the statutory deadline.

If CIP2 does get some PTA, it can only take advantage of that PTA to the extent that CIP1 also has PTA. (P1 PTA is not relevant.) If CIP1 did not get any PTA, then it and CIP2 again expire on the statutory 20-year deadline.

In addition to the "can't separate the patents" problem, you also have twice as many maintenance fees to pay. I haven't investigated, but I don't know whether P2 can survive if you let P1 expire (e.g. by not paying the maintenance fee.)

The 2nd does survive early termination of the parent. Most people put language in the TD form mentioning that what's disclaimed is time in excess of the parent's full, statutory term, as modified by any PTA granted to the parent. (The full term is what it is, regardless of whether the patent is actually maintained for that full term)

What's the ratio here between people who use eTerminalDisclaimer and those who draft up their own TD form? It seems to me that the Office really leans on you to use eTD...I wouldn't be surprised if they train the doc intake people to find every possible reason to reject paper filings.

What's the ratio here between people who use eTerminalDisclaimer and those who draft up their own TD form? It seems to me that the Office really leans on you to use eTD...I wouldn't be surprised if they train the doc intake people to find every possible reason to reject paper filings.

Most (at least 80% probably more like 90%) I see nowadays are the e-type. They are approved immediately, which is great for me. Sometimes the others are not approved by the time I pick the case up and I have to email someone and wait for them to do it, which may or may not be quickly done.

I don't really know if there are other pros and cons offhand. Do you guys actually write the TD language when e-filing or is it just a form? I don't know why you wouldn't use unless it's a form and there is something objectionable in the form language, and that something objectionable isn't actually required for a valid TD. I have not compared any form and the requirements to see if there may be anything objectionable so there could be, but at the very least 90% of my TD filers don't care...

In my experience it is incredibly rare for a TD to not be approved, whether e-type or other. Whenever I see it happen it is missing something super obvious, like the fee or they forgot the patent number or left out important language...I've also seen TDs approved that should not have been. I imagine the paralegals who look at them just go down a list "Does it say X?" "Does it say Y?" "Does it have the fee?" If all boxes are yes approve, if not disapprove. I'm not really sure what you are getting at by "every possible reason to reject" because there are requirements that (I think) are clearly spelled out, you meet them or you don't and they are pretty easy to meet (I think), is there really any discretion here? Shrug...

« Last Edit: 10-09-17 at 10:57 am by lazyexaminer »

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I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.